Fack Ju Göhte: Offensive, vulgar or a trademark registration?

4 maart 2020

If a trademark office deems a potential trademark to be contrary to public policy or accepted principles of morality, it can refuse to register the mark. Following a recent CJEU decision, concrete evidence will be necessary to substantiate that decision, as Casper Hemelrijk explains.

Constantin Film Produktion, the studio behind some of the biggest German blockbusters, released the comedy Fack Ju Göhte in 2013, and the sequels Fack Ju Göhte 2 and 3 in the years that followed. Such was their success, Constantin Film applied to register the film title as a trademark, but the application was denied on the grounds it infringed accepted principles of morality.

As set out previously, the European Union Intellectual Property Office (EUIPO) seems to be more willing to make use of this grounds for refusal than the Benelux Office for Intellectual Property (BOIP) for example. Now, after several appeals, the Court of Justice of the European Union (CJEU) has ruled that the mark is morally acceptable.

Background to the dispute

Following the trademark’s refusal, Constantin Film unsuccessfully appealed EUIPO’s decision at the General Court of the EU. However, that court agreed that the film title was contrary to the accepted principles of morality and confirmed the refusal. As a result, Constantin Film appealed the case before the CJEU.

Advocate General (AG) Bobek submitted his opinion in July 2019, finding that both EUIPO and the General Court erred in applying the rules, since they did not make a distinction between public policy on the one hand and accepted principles of morality on the other. In addition, he found those authorities did not give a proper explanation as to why this film title would actually be contrary to the moral values.

The case then returned to the CJEU to make a final decision: Would it rule on the basis of the AG's opinion or instead agree with the arguments of EUIPO and the EU General Court? The CJEU took its final decision in the matter on 27 February 2020, deciding to follow the AG’s opinion.

In its ruling, it noted in particular that:

The notion of accepted principles of morality oversees the fundamental norms and values that prevail in a defined society at a given moment.

What this society considers to be morally acceptable can change in due course, therefore making an objective assessment on case-by-case basis necessary.

The assessment should be based on the perception of a ‘reasonable person with an average threshold of sensitivity and tolerance’.

Furthermore, account should be taken of the context in which the mark may be encountered, and where appropriate, the particular circumstances of the case.

If, on the basis of this objective assessment, the use of the mark is perceived by the relevant public as being contrary to the fundamental moral values and standards of that society, the trademark application may be refused.

Application to Fack Ju Göhte

There can be no misunderstanding that Fack Ju Göhte is the phonetic transcription of an English obscenity. However, this does not mean that the German-speaking public would perceive the German wording in the same way. For that reason, the CJEU found that trademark registries should not limit themselves to the abstract assessment of the English expression; instead, they had to specifically assess the German variant.

In this context, it’s important to note once again that Fack Ju Göhte has been one of Germany’s greatest film successes, drawing millions of people to the cinema. Despite these considerable ratings, the film title had not given rise to controversy at any point. On the contrary, the film is approved for a young public and is used for educational purposes by the cultural Goethe-Institut. This clearly indicates that the German-speaking public does not consider Fack Ju Göhte to be morally unacceptable.

Furthermore, the CJEU found that the General Court wrongly assumed that the fundamental right of freedom of expression plays no role within trademark law. In fact, the relevant regulations expressly emphasise the need to apply fundamental rights and freedoms – in particular, freedom of expression – in the trademark examination process.

Finally, the EUIPO was not able to put forward any arguments to show that the German-speaking public considered the term 'Fack Ju' to be contrary to the accepted principles of morality. In the event of such a lack of concrete evidence that the mark is deemed unacceptable by the relevant public, the ground for refusal may not be applied by the authorities, according to the CJEU.

Impact on EUIPO decisions

Following the CJEU judgement, EU trademark registries will need to be more careful when making decisions based on this grounds for refusal. If they are to reject a trademark application on the grounds it is contrary to accepted principles of morality, they will need to refer to concrete evidence to substantiate that decision. From the EUIPO’s perspective, that will mean that applying this ground for refusal will become more labour-intensive in future.

Ultimately, as the CJEU has ruled, this ground for refusal should reflect the moral compass of the relevant society and not the gut feelings of trademark examiners.

Casper Hemelrijk is a Junior Associate in Novagraaf’s Amsterdam office.